HUMBERTO URRIOLA

[2001] APO 29

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Patent:          No. 593085 in the name of Humberto Urriola

Title:          Drainage Cell

Action:          Request to amend the complete specification under section 104.

Decision:          Issued            .

Abstract

Request to amend under section 104 after a finding of invalidity by the Federal Court. Amendments found not to be allowable:

1. Under section 102(1) because the feature that "all areas between the perforations are directly supported" was not in substance disclosed in the specification as filed; and

1. Under section 102(2)(a) because substitution of the general requirement of, "at a load bearing capacity suitable for sub-surface drainage", for the specific limitation, "of at least 20 kilograms per square meter", would mean that claim 1 would not in substance fall within the scope of the claims of the specification before amendment. In particular the evidence suggests that in fact  a load bearing capacity suitable for sub-section drainage could be significantly less than 20 kgm^-2 and consequently would fail the test per AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 that, "as a result of the amendment, nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment".

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent No. 593085 in the name of Humberto Urriola and a request to amend the complete specification under section 104.

BACKGROUND

Australian patent 593085 was sealed on 17 May 1990. On 9 February 1994 proceedings for infringement and a cross-claim for revocation of the patent were commenced in the Supreme Court of New South Wales. After a separate finding on several questions relating to the validity of the patent and consequential orders (Atlantis Corp Pty Ltd & Anor v Schindler & Ors 33 IPR 91) Justice McClelland ordered inter alia that the patent be revoked so far as it related to claims 1, 3, 4, 5, 6, 7, 9, and 11 - See Atlantis Corp Pty Ltd v Schindler (1997) AIPC 91-340. A stay of those orders was granted ([1977] 455 FCA (27 May 1997)) and the appeal subsequently heard by the full bench of the Federal Court (Lockhart, Wilcox and Lindgren JJ). In its decision (Atlantis Corp Pty Ltd & Anor v Schindler & Ors 39 IPR 29) the Court found that the specification did not comply with section 40 (2) and (3), that the invention claimed was not novel and that the patent was obtained by misrepresentation. These conclusions were based significantly on the finding that the cell structure claimed was not limited to the purpose of sub-soil drainage as described and that it was anticipated by the piece of plastic paddle bat found by Mr Urriola in 1986. Consequently the Court set aside the orders of the Supreme Court and ordered the patent be revoked in toto. It also however ordered that "Liberty to apply be reserved."

Subsequently, the patentee sought an order staying Order 6 (the order revoking the patent) and on 18 December 1997 Wilcox J, inter alia, ordered that:

"3. The execution of Order 6 made by Lockhart, Wilcox and Lindgren JJ in the Federal Court of Australia in the matter no NG284 of 1997 on 24 October 1997 be stayed pending the determination of an application to amend the Patent or further order."

Wilcox J also noted that:

"The Appellants undertake to the Court that during the period of the stay in Order 3:

(a) they will not threaten or commence proceedings for infringement of Australian patent No. 593085;

(b) they will take steps to have the patent amended as set out in the affidavit of Humberto Urriola sworn 5 December 1997 with expedition."

A request to amend the complete specification under section 104 was received by the Commissioner on 21 January 1998. On 1 May 1998, a Deputy Commissioner of Patents advised the Patentee that the Commissioner was not able to consider the amendments under section 104 because the patent remained the subject of "relevant proceedings" under section 112 of the Act. Consequently the Patentee was advised to seek amendment under section 105, the procedure for which is dealt with under O58 Rule 10 of the Federal Court Rules.

As provided by those Rules, a notice of intention to apply accompanied by an advertisement was filed. Before advertisement in the Official Journal, a delegate of the Commissioner of Patents wrote to the Patentee indicating that the amendments proposed would appear to contravene section 102 in that claim 1 as sought to be amended does not in substance fall within the scope of the claims before amendment. The report indicated that, "there was nothing in the specification, either before or after amendment, which suggests that a load bearing capacity " suitable for sub-surface drainage" equates to a load bearing capacity of at least 20 kilograms per square meter." The Patentee was requested to indicate whether the advertisement should proceed regardless, to make further amendments or to provide argument in support. Evidence was filed and the application to amend was advertised on 10 September 1998.

On 4 November 1998 the Patentee filed a notice of motion with the Federal Court seeking an order that the patent be amended under section 105. However in Atlantis Corporation Pty Ltd v Schindler (No 3) [2000] FCA 1758 Wilcox and Lindgren JJ (Lockhart J having resigned his commission) refused to make the order sought because there were not on foot "relevant proceedings" for the purposes of section 105 because, despite the suspension order, the revocation proceedings had been finally determined on 24 October 1997. The Court indicated that the reference to "application to amend the patent" in the Orders of 18 December 1997 was probably a reference to a proposed request under section 104. It went on to make a number of observations about whether it would otherwise have been appropriate to direct the amendment sought. These observations did not focus on the allowability of the amendments under section 102 but whether proposed amended claim 1 would be fairly based on matter disclosed in the provisional specification. This is critical as the patentee seeks to retain the priority date of 9 April 1986 to avoid self publication. Notably the Court found that:

"There is no basis in the text of the provisional specification for a requirement that the non-perforate areas of the planar surfaces be able to bear a weight of at least 20 kilograms per square metre, although there is a basis for saying those areas must have "a load bearing capacity suitable for sub-surface drainage". Clearly, the structure would collapse if it could not bear the load imposed by the earth above it (of whatever depth it might be) and by any activity taking place on the surface of the ground."

Furthermore:

"… we think that a drainage cell required to have at least 40 per cent of its planar surfaces occupied by perforations is not fairly disclosed by the provisional specification in this case.

33 This conclusion means that if we had had jurisdiction to entertain the motion, we would not have directed amendment of the patent as sought. We need not address other submissions that were made, including a submission by Mr Schindler that the proposed general formulation of the load-bearing capacity, even if fairly based on matter disclosed in the provisional specification, is deficient."

On 5 March 2001, further amended claims were filed with the Patent Office as a continuation of the original section 104 request and on 7 March, a delegate of the Commissioner reported that in his view those amendments would also contravene sub-sections 102(1) and 102(2)(a). Subsequently, the Commissioner notified the Patentee that the matter had been set for hearing "with a view to refuse". In response, the Patentee filed further amended claims and submissions. These were also not considered to overcome the issues raised and a final hearing date was set, although after a number of deferments requested by the Patentee. In the event, the patent attorney for the Patentee indicated that he had been unable to obtain instructions from his client and that the Patentee would not appear. He did, however, request detailed reasons in the event of rejection of the amendments.

SPECIFICATION

The contents of the patent specification have been judicially considered on a number of occasions and hence it is adequate to refer to the summaries provided in the decisions mentioned previously and particularly those of the Full Bench. However, for reference, claim 1 of the patent specification reads:

"1 A rigid cell structure comprising a first and second substantially parallel perforate planar members maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means in any direction."

PROPOSED AMENDMENTS

Over time, the amendments proposed by the Patentee have varied significantly from those put before the Court. The last proposed amendments were filed on 27 April 2001 and include an amended claim 1 as follows. The text bracketed {…} is intended to be deleted by the amendment and the text underlined to be added.

"1.       A rigid drainage cell {structure} adapted to be used in a sub-surface drainage systems [sic], said drainage cell comprising:

{a} first and second substantially parallel perforate planar members maintained in a fixed spaced relationship from each other by means of a plurality of spacer members;

the spacer members being columnar in configuration and disposed substantially normally to the two planar members whereby all areas between the perforations are directly supported by the spacer members at a load bearing capacity suitable for sub-surface drainage;

{the perforations in the planar members comprising at least 40% of their surface areas, and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre}the area of perforations in the planar members being approximately 50% of their surface areas, and the perforations of each planar member being out of register with the perforations of the other planar member,

the perforate nature of both surfaces and the disposition of the spacer members being such that gases or liquids may freely pass through the {composite structure} drainage cell around the spacer {means}members in any direction."

DECISION

Despite the complex procedural background to this case, the role of the Commissioner at this point is quite simple and is limited to consideration of the patentee's request to amend the patent specification under section 104. The allowability of amendment requested under that provision is governed by section 102, which provides:

"102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment,

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b) the specification would not comply with subsection 40(2) or (3).

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."

In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, the full Federal Court said that a "two stage" process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1). The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment. Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed. The court, when discussing the second stage, emphasised that:

"The subsection [102(1)] focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression 'matter not in substance disclosed in the specification as filed'.  The key point to keep in mind is that the words 'as a result of the amendment' are not to be confused with the expression 'after the amendment'."

The requirement of substantial disclosure is closely related to the requirement that a claim must be "fairly based" on matter disclosed in specification. Another helpful way of expressing the test is that there must be "a real and reasonably clear disclosure": see Fullagar J in Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and Leonardis, Nicola v Sartas No 1 Pty Ltd & anor [1996] 449 FCA 1.

In relation to section 102(2)(a) it is only a requirement that the claims fall 'in substance' within the whole set of pre-amendment claims, per AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 at 289 in which it was stated: "as a result of the amendment, nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment".

In considering a specification for the purposes of section 102, the normal rules of construction apply. It is one of these rules is that a patent specifications must be construed in the light of the common general knowledge in the relevant art at the priority date of the application - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, Decor Corp v Dart Industries 13 IPR 385 and Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058 . It is another rule of construction that where there is a choice between two meanings, one should, if possible reject the meaning that leads to an absurd result (Henriksen v Tallon Ltd [1965] RPC 434) and one should read the specification liberally and be "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33

I will look, in turn, at the three most significant changes proposed in the amendments:

1. "A rigid drainage cell { structure } adapted to be used in a sub-surface drainage systems [sic], said drainage cell comprising"

The specification, as originally filed, clearly anticipated the use of the cell structure for drainage in a subsurface environment and the addressee would in the context of the specification be able to subscribe a meaning to "adapted to be used in a sub-surface drainage systems". The limitation to the drainage and sub-surface environment also clearly brings the claim within the scope of the claims before amendment. Consequently, the amendment in this respect is not objectionable.

1. "the spacer members being columnar in configuration and disposed substantially normally to the two planar members whereby all areas between the perforations are directly supported by the spacer members at a load bearing capacity suitable for sub-surface drainage"

This amendment would introduce into claim 1 the limitation from claim 4 that the spacers be columnar in configuration and substantially normal to the planar member. It adds to this the requirement that "all areas between the perforations are directly supported by the spacer members at a load bearing capacity suitable for sub-surface drainage". It is not entirely clear to me what is meant by "whereby all areas between the perforations are directly supported" but the limitation to "all areas" and "directly" suggests to me a configuration that cannot be supported by the specification as originally filed or indeed of the patent. The cell structure disclosed clearly relies on columnar spacers at each corner of the load supporting portions permitting the perforations on the opposed planar members to be offset and to allow cross-flow of fluid. Hence even taking into account the low planar walls or ribs bracing the spacers, substantial parts of the areas between perforations cannot said to be supported directly but are supported only at spaced intervals. I can find no other reasonable construction to place on the phrase "directly supported" and therefore I do not believe there is a real and reasonably clear disclosure of the feature sought to be added. Accordingly I do not find the amendment allowable under section 102(1). 

1. "… at a load bearing capacity suitable for sub-surface drainage; {the perforations in the planar members comprising at least 40% of their surface areas, and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre} the area of perforations in the planar members being approximately 50% of their surface areas, and the perforations of each planar member being out of register with the perforations of the other planar member"

Wilcox and Lindgren JJ in their decision on the appeal indicated that the features mentioned in the proposed deletion were not disclosed in the provisional and it is apparent that this finding applies to the specification as amended also. As such it would be an unusual result if the removal of those features were to result in the claiming of matter not in substance disclosed. As to the matter proposed to be added, the specification as filed does disclose planar surfaces having approximately 50% of their surface area devoted to perforations as well as perforations out of register. Consequently there would appear to be compliance with section 102(1).

In relation to section 102(2)(a) one must consider the variance in scope that may arise by removing the specific requirement for load bearing "of at least 20 kilograms per square meter" and substituting the general requirement that the areas between perforations be supported "at a load bearing capacity suitable for sub-surface drainage". As I understand it the Patentee's contention is that the two are equivalent and evidence has been provided to both the Court and the Commissioner to support that position. While it is not readily apparent to what extent this evidence was considered by Wilcox and Lindgren JJ, the decision of the Court does suggest that they did not consider 20 kilograms per square meter (20 kgm^-2) to be synonymous with the requirement of "suitable for sub-surface drainage". Otherwise they would not have observed that:

"There is no basis in the text of the provisional specification for a requirement that the non-perforate areas of the planar surfaces be able to bear a weight of at least 20 kilograms per square metre, although there is a basis for saying those areas must have "a load bearing capacity suitable for sub-surface drainage". Clearly, the structure would collapse if it could not bear the load imposed by the earth above it (of whatever depth it might be) and by any activity taking place on the surface of the ground."

However, having dismissed the notice of motion, these comments are clearly obiter and directed to the question of fair basis and not allowability under section 102.

Mr Taylor has submitted that the Patent Office has previously accepted the evidence presented in the declarations by Mr Taylor and Mr Rochfort, citing a letter of 15 September 1998 in which a Supervising Examiner indicated that:

"if the material is a true reflection of what is commonly known in the field of the invention to which patent no. 593085 relates, the Commissioner would be of the opinion that the amendments comply with section 102"

This statement was however made in the context of pending section 105 proceedings, and was followed by the statement that:

"However, the Commissioner is unable to assess whether the material put before him properly reflects common general knowledge. Accordingly the Commissioner will be considering whether he should appear in the proceedings."

Consequently, while at best there could be said to be a prima facie finding, the Commissioner at that time was not (at least in his view) considering a request under section 104 and was not prepared apparently to undertake a substantive consideration of the evidence in that light. I also note that from the time the matter was returned to the heading of section 104, the Commissioner has consistently taken the position that the amendments are not allowable.

From the foregoing, I am of the view that I am entitled, and indeed obliged, to give full consideration to the evidence filed in this matter and to reach my own conclusion as to its merit in the determination of the section 104 request. However in doing so, I find that the evidence is less than convincing. In my view, neither of the declarants Mr Taylor and Mr Rochfort are persons skilled in the art of manufacturing sub-surface drainage systems, although Mr Rochfort has experience using such systems. Mr Taylor is a patent attorney and chemical engineer and while Mr Rochfort is a horticulturist and I accept his evidence as to the cultivation of seedlings and the medium and depth used, I am surprised that he would have a day to day appreciation of the weight loading of that material. I would have expected a person in Mr Rochfort's position to merely have a generally appreciation of the rigidity required to avoid sagging or collapse under the use to which he put the drainage cell.

In any event, the evidence is also contradictory. Mr Taylor says that the drainage cell can have only 2 cm of soil or sand and soil mixture to support such as for the cultivation of seedlings. He goes on to say that 20 kgm^-2 represents a minimum depth of soil between 1.5 and 2.0 cm and that this represents a very insignificant loading. He also refers to density tables with values listed for soil and sand. Mr Rochfort on the other hand says that seedlings require very little soil for cultivation and usually only 1 to 2 cm of organic matter, polystyrene balls and sand. He also says later that "for every centimetre depth of soil over a square metre, there is a weight loading of 10-12 kilograms". It would appear reasonably clear that a 1cm layer of "organic matter, polystyrene balls and sand" would weigh significantly less than the 1.5 cm layer of soil and sand referred to by Mr Taylor or the centimetre of soil that Mr Rochfort indicates would produce a weight loading of 10-12 kg. Consequently, from the evidence, it would appear likely that "suitable for sub-surface drainage" could imply a loading significantly smaller than 20 kgm^-2 and probably less than 10 kgm^-2. This conclusion is confirmed by a few simple calculations based on the density table provided by Mr Taylor and it is difficult not to see the evidence as merely attempting to justify an arbitrary limitation that after all was only introduced during examination to avoid the prior art.

Load bearing at a loading of at least 20 kgm^-2 is a key limitation of the existing claims and I do not believe that any significantly lower value could possibly be considered to be "in substance" within the scope of those claims. In terms of the AMP decision it is also highly probable that, as a result of the amendment, something would "become an infringement of the patent which would not have been an infringement of the patent before the amendment". For this reason I find that the amendment proposed is not allowable under section 102(2)(a).

CONCLUSION

I find that the amendments proposed by the Patentee are not allowable because as a result the specification would claim matter not in substance disclosed in the specification as filed and because claim 1 of the specification would not in substance fall within the scope of the claims of the specification before amendment. As a result I refuse the request for leave to amend.

I observe that this conclusion would appear to place the patentee in a untenable position given that it would seem highly unlikely that an amended claim could be devised which was both within the scope of the current patent claims but was also fairly based on the provisional. In any event, I note that the patent was advertised ceased on 26 October 2000 for failure to pay a renewal fee and as such this perhaps is the end of the matter.

Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the Patentee  :    Paul R Taylor & Associates, Mosman